from the likelihood-of-confusion dept

The latest example of nutty trademark claims comes from Rimowa, makers of various luxury luggage cases, including the Topas briefcase that has been seen in various movies over the years -- including The Avengers. The case is distinct, and Rimowa actually cultivates its appearance in movies, hiring a product placement firm with the ridiculous name PRO.P.AG.AND.A G.E.M. to get its products into movies. As Marvel was working on the movie, it apparently got one of the Rimowa Topas cases itself, but also asked the product placement firm for some backup cases, which it provided on the condition that they be returned to the company after filming (which they were). However, with Marvel announcing its box set being packaged in a "replica" case, Rimowa is not happy:

Images of the replica briefcase on Marvel’s advertising materials, and fan video from Marvel’s product display at this year’s ComicCon convention, show the plastic ‘replica case’ to be a close copy of Rimowa’s Topas attache case in every respect but quality -- from the proportions and coloring, to the style of the handle and latches, and, of course, in the use of the trademarked parallel ridges around the body of the case.

Of course, for there to be a straight trademark infringement claim, (1) they have to be competing in the same market and (2) there must be a likelihood of confusion. It's difficult to see how either thing is true. A movie box set is not in the same market as an overpriced travel case. And no one's buying one thinking it's the other. In fact, I'd think that having the replica used for the box set would likely increase interest in buying a real Rimowa case. And isn't that why the company wants its cases in movies in the first place?

There's a separate "dilution" trademark claim, suggesting that this packaging somehow dilutes the company's trademarks, but again, I just don't see it. It seems to reinforce the value of the original cases, not take anything away from it. Of course, the company's actions have ensured that I'd have no interest in ever buying any of its products in the future -- in which case, filing silly petty lawsuits is likely to do a lot more harm to its brand than the fact that Marvel is playing up its style in the box set packaging for a hugely popular movie.

They are embarrassed by their product placement firms name and are officially withdrawing from putting their products into movies ever again.

I am sure some lawyer got them all riled up about all the money they were going to loose by not attacking over this plastic piece of junk, and ignore the very good chance they will have marked themselves as a company to toxic to worth with in the future. They aren't the only case maker on the planet, and now with rapid 3d prototyping they can churn out items that have no attachment to anyone they don't have full rights to.

It would be much smarter to issue a license to use the case for DVD distribution. After all, what could be better product placement than putting replicas of the case into the hands of viewers? That would protect them from dilution problems. But the lawyers would probably make more money suing than the would drawing up a simple license.

I'm sure Stark Industries can find some IP to counter-sue over. It wouldn't surprise me if a make-believe company from a comic book filed suit over some random patent. Nothing involving IP surprises me anymore.

So earlier we have a post about how the Apple lawsuit against Samsung is unfair because there's no way Samsung could have designed their phone differently, yet now it's about how all lawsuits about design rights are unfair.

Look, it's simple.
Rimowa came up with the design of the case so it belongs to them. If the movie studios wanted to manufacture and sell replicas, they should have secured those rights when negotiating with Rimowa to have their case in the movie.

Do you also think that the producers of James Bond movies should be allowed to sell fake Swiss watches, even under the excuse that "Oh it's not technically a fake Swiss watch, it's a replica (of James Bond's watch)"? I doubt it.

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Or better yet, let's turn the question around:
Can Rimowa sell copies of the Avengers' DVD? "It's not a copy of the original Avengers movie, it's a replica of the movie in which our briefcase played a role".

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Did you miss the part about "not being in the same market"? A DVD Box set will never be used as a high-end travel case. Not one in my life have I thought I needed a good brief case and the New Releases in Best Buy was the place to go look. If, to pick something random, they sold a box set of the classic Get Smart TV show in a replica of his shoe phone, I don't think anyone would buy that hoping for comfy footwear.

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I'd take some of your own advice and read the article as well if I were you. It mentions this little thing about 'competing in the same market' and 'chance of confusion'. I doubt people buy Samsungs thinking they're iPods, but my crack research department tells me that they're both smartphones.

I'm with the plaintiff on this one. It's clearly a knock-off and the studio obviously borrowed the cases to study and copy them. until the end, I was sure this story was going to be about how Hollywood studios only respect their own IP and rip off anyone else they care to.

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And a plastic fake Rolex will never be used as a high-end, platinum plated luxury Rolex. In fact people who buy the plastic one can't afford the expensive one, and those who buy the expensive one don't want to be caught dead wearing the cheap one), so arguably they are NOT in the same market either.

But that doesn't matter.
The problem is, if everyone gets to wear an imitation Rolex that looks real even though it's made of plastic, I won't buy a real Rolex ever since everyone will assume it's probably a fake. It hurts the image and value of Rolex watches.
I'll argue that you don't need to travel by plane with a briefcase to make use of it. A plastic case could be good enough for taking the car or subway to work, or just sitting in your home's lobby so you look cool when you have guests over.

Additionally, if producing and selling fake Rolex watches becomes legal as long as they're clearly advertised as fake, then who's preventing me from buying a bunch and selling them as real Rolex watches? My customers would be harmed by my deception.

Finally, let's also remember that Rimowa designed the case, and they spent money to make that design. Then, the producers of the Avengers just copy the design to sell their DVD and they don't give a cent to Rimowa. That is not fair. I'm sure even the pirates here can appreciate this.

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I think the dilution of trademark claim has legs. Rimowa makes pricy but quality products. While I probably won't want to use a replica DVD box as luggage, seeing a flimsy plastic case break at the first drop to the floor certainly doesn't reinforce Rimowa's image of quality products.

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you don't need to travel by plane with a briefcase to make use of it. A plastic case could be good enough for taking the car or subway to work, or just sitting in your home's lobby so you look cool when you have guests over.

"Hmm, I really want some expensive luggage to carry my stuff in, but where to look for it? I know! The fucking DVD section of Amazon"

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And now they get a bad rep for going legal. When what they could have done was say, "look, we don't want you to do that, so we'll sell you these actual briefcases, 'cause we don't want the knockoff you use here to look like ours."

That would have solved a ton of problems, instead of lining their legal team's pockets.

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Finally some people with common sense.

I hate copyrights, I often find myself opposed to patents, yet on this case some people here are treating me like an anti-piracy apologist. Ugh.
Has this website been taken over by the most extremist of pirates?

I'm also as surprised as you by this post, I've really been used to greater wisdom from Mike. Thank god I can enjoy Techdirt without becoming a fanbo´ unlike some here, it allows me to remain critical when nonsense like this is posted.

Re: I'd never even heard of Rimowa

"I just thought it was a generic briefcase prop dressed up with SHIELD logos and a cinematic shout out to Pulp Fiction. Shows how well their advertisements worked."

Which could be part of Rimowa's complaint, the fact that Marvel used their design and DIDN'T credit the luggage company!
And, by creating the impression in the public that it's a "generic briefcase" (as Jay thoughtfully mentions), Marvel DOES dilute the trademarked design!

Re: I'd never even heard of Rimowa

"Also, that may be the most ridiculous acronym I've EVER heard in my life."

Never heard of...
T.H.R.U.S.H. (Technological Hierarchy for the Removal of Undesirables and Subjugation of Humanity) from THE Man from U.N.C.L.E.
or
CONTROL and KAOS (which actually didn't stand for anything) from Get Smart?

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Seriously? You're actually going to pull the red herring on me now?

Yes, Rimowa could have tried striking a deal with the producers. Yes it would have been beneficial to both of them. Yes it would have made them look even cooler (not that I'm certain their customers really care). No, failing to do all this doesn't make them douchebags.

It doesn't change the fact that it's their design (which they spent money developing) and the movie producers decided to use it for commercial purposes without thinking of giving Rimowa a cut, not to mention that the producers didn't even care whether this could cheapen Rimowa's brand or otherwise harm it.

And in Rimowa's defense, I'm not sure how anyone can fault them for not wanting to do further business with selfish people like these producers who tried to screw them over.
In a perfect world you give everyone a chance, but in the real world you can't always afford it. Maybe Rimowa just said "hey, we did a deal with those guys once, then they tried screwing us over. Let's play it safe and not cut another deal with them, we just don't know what other BS is going to come out of it". Can't fault them for that.

Suggesting that Rimowa have no legal grounds, or that they're morally wrong for suing - that's what's wrong.

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Well since Rimowa makes luggage, and the studio makes Movies and publishes DVDs, where is the confusion?

Oh right, its made up, in your head.

You disagree with facts. Sounds logical.

I'm not sure the USPTO has the same thought process as you do about it. They are the authority on the matter after all, and not you. Neither am I, but what I'm saying has more in common with what they do than what you are saying.

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Things I learned on techdirt today:
1. Those funny silver briefcases Hollywood puts in its movies are actual briefcases made by an actual briefcase company and not just props.
2. Even if I wanted a funny silver briefcase, I wouldn't buy it from them.

In fact, I'd think that having the replica used for the box set would likely increase interest in buying a real Rimowa case. And isn't that why the company wants its cases in movies in the first place?

There's a separate "dilution" trademark claim, suggesting that this packaging somehow dilutes the company's trademarks, but again, I just don't see it. It seems to reinforce the value of the original cases, not take anything away from it.

You keep trying to apply logic to these situations when the company's position can be explained by just three words:

The Script writer can have a field day with this. Picture Stark walking in with a different case. Banner saying new brief case? Stark say yeah that last one was a piece of crap I like (insert product name) better.

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That's irrelevant. Buying it because it 'looks like' the attache case by Rimowa isn't the legal standard. They have to buy it thinking it is the Rimowa case. It must look similar and do the same things. It fails the legal test because it's not an attache case in much the same way I could build a car in that shape and it would also not be infringing.

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Are you telling me nobody is buying the case because it looks like the cool Rimowa briefcase?

Nobody is buying the DVD box set because they want an imitation Rimowa briefcase. I think I'm on very safe ground in saying that Rimowa hasn't lost a single sale of briefcases because somebody purchased the DVD instead.

Selling the box set in the case probably does increase sales of the set, but that's not at all relevant.

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yet on this case some people here are treating me like an anti-piracy apologist.

I'm not, I just think that you're wrong. (Not necessarily about trademark dilution -- but that isn't what we were talking about).

You've been analogizing this situation with ones where people are selling counterfeit products (folexes and the like), and those analogies are completely inapplicable.

Nobody is being fooled into thinking this diminutive DVD case is an actual briefcase of any sort, let alone an expensive one. Nobody will be buying the DVD set in an attempt to get a replica of a briefcase that would substitute for buying the real thing. You've been comparing apples & oranges.

There is no traditional trademark violation here. There may be a case for dilution, but that's always a squishier thing and we won't know until/unless it's litigated.

And I admit to being a little dismayed at actually defending a mainstream movie studio here. But I'm not so sure they're in the wrong.

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The problem, as I see it, is that any position that isn't totally reinforced by Mike's analysis of an issue is immediately thought to come from one of the shills (TAM), one of the insane (boB), or one of the awesome trolls (me) unless it's a named account. DH used to disagree with Mike from time to time and give thoughtful analysis. However, he is a respected name. Being AC automatically means you're a fervent follower or a rabid retard.

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Yes, yes. We all know that you want to jump on any story about a large company and shout about how INDIE is awesome. It's not everyone's cup of tea. Analyze the post, offer opinions that deal with the topic at hand rather than shouting a minority opinion because someone says $largeentertainmentcompany, or be thought of as the boB of the piratard side of things.

TL;DR You're an idiot. No one cares about your personal entertainment choices unless that's what the article is actually about. This is about trademark claims between companies.

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I should add a little more about this. If you use the GM logo on the scale model, you're in greater danger -- if an average joe might be confused into thinking GM is the one making the model, then you have a trademark violation. If not, then you don't.

So, if GM doesn't make its own models, and you use a different logo (a "PM" logo, maybe), then you can produce your own scale models of Corvettes without a problem.

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True but since companies have to abide by their own rules and counterfeiting is for the moment a "real problem" according to law enforcement, it will be funny to see how the DOJ and others will react to this.

Replicating a product without permission is by law a criminal act even if it is ridiculous I find it that this kind of stuff sends the message loud and clear.

In a permission society you have to ask permission for everything, don't see why studios should get a pass when they themselves lobby for it to not happen.

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"And in Rimowa's defense, I'm not sure how anyone can fault them for not wanting to do further business with selfish people like these producers who tried to screw them over. "

So the film's producers created a product that does not compete with Rimowa at all, but it does strengthen the connection to the movie, which already provided publicity for Rimowa, so Rimowa can benefit from the extra promotion, and all this cost them absolutely nothing. And you really think they're getting screwed over?

You know what will really screw them over? Lawyers fees (money being spent for zero gain and possible loss), and damage to brand reputation. There is no possible way they can come out of this better off than if they just shut the hell up, or even better, played up the free promotion they're getting.

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"I hate copyrights, I often find myself opposed to patents, yet on this case some people here are treating me like an anti-piracy apologist. Ugh."

No, you're being treated like someone who thinks someone is going to buy this DVD set so they can use the case as a briefcase, and that Rimowa is somehow harmed by this product. These are silly ideas, so you're being treated accordingly.

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Looking at the pic, it looks like most rugged metal briefcases I've seen, including those used in comics. I would guess that the studio jumped at the offer of being paid to use something that was similar to existing artwork.

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25% of all MACs are never switched on, people buy them as ornaments so they can say "I have the latest model of MAC" to their hipster friends....(info comes from Apple themselves who aren't bothered because there's no tech support for a computer thats never used).

So SOME Ipod customers MIGHT confuse samsung products....assuming those are the 25% hipster/braindead apple customers of course.............

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Unfortunately the Boxed set DOES do the same thing as a Rimowa case (which is to be an overpriced pointless piece of tat that will gather dust and never be taken out of the attic after the first week)...

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It would be much smarter to issue a license to use the case for DVD distribution. After all, what could be better product placement than putting replicas of the case into the hands of viewers? That would protect them from dilution problems. But the lawyers would probably make more money suing than the would drawing up a simple license.

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I'd think you be cool as long as you didn't put Aston Martin on it. (Not sure, but does the box set say Rimowa?) Think of how many generic toy cars from companies (not Hot Wheels or Matchbox) that look identical to real designs but have different or no names at all.

If anything, (in my analogy) maybe Aston could get you because they sold the exclusive rights to another toy car company or something, but I don't think it would be a trademark dilution issue in that case (at least not for Aston.) In your analogy, well neither Aston nor Hot Wheels makes flash drives.

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Wait a minute - so Rimowa pushed their product placement into Avengers.
Avengers producers: "OK, but we need some backup cases."
Rimowa: "Sure, but return them after you used them."
Avengers producers: "Sure, no problem"

Now Rimowa wants to push its products into Avengers marketing? Really? So when some Avengers fan wants a DVD with a special DVD holder, he will have to pay more for the effin case than DVD is actually worth?

Or shortly:
Rimowa pushed its product into the movie. Producers said it's ok - they could just choose another one. They could design it themselves - design of a nonfunctional suitcase is trivial. So now, when they made a replica (since they already had Rimowa product placement in the movie) of that case, Rimowa wants a piece of that nonexistant cake. Bitch please. :)

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Twice double standards ?

Why is it bad when a small company defends its intellectual property against the creators of cool superhero characters, who are the most ardent defenders of their rights (and rightfully so I might add)? Not that cool when the roles are reversed though. Do we detect double standards here ?
Therefore what happens when they happen to do this not just once, but twice? Indeed, Marvel granted a license to Hot Toys to make a collectible figure of Nick Fury carrying ?...that's right - his Rimowa briefcase. Said briefcase which apparently can be purchased separately. So Marvel is making money by granting rights to make and sell something that doesn't belong to them ? Is that OK ? Or being cool put you above the law ?
Not a matter of money, but one of principle. You need to respect what you preach...and yes, cannot avoid feeling a bit of Schadenfreude in this case !

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I'll start this by saying that I have no idea how trademark law works in law, but the different tests mentioned in the article can still be analysed and commented on.

I agree with the majority here that there is no competition here, the different sizes (they are different, right?) in particular would make it extremely unlikely that anyone would want to use the dvd case as a replacement for real luggage.

On the dilution side, I find myself wondering. The trademark refers to the style and shape of the briefcase... if someone sees a case that looks like this, Rimowa wants them to think of their cases and want to buy one. If people start associating the style with the Avengers movie (or anything else), then that could be justified as dilution because (more) people seeing the case may now think about movies instead of Rimowa briefcases.

Does the law actually work like that? I have no idea. What happens if the competition test fails but the dilution test succeeds? I have no idea.

It does seem that the best winning move for Rimowa would have been issuing a license with a condition that the case would require printing or embossing "briefcase design licensed from Rimowa" somewhere on the case itself. I wonder how much say the lawyers actually have in the decisions made in these affairs. Then again, if Rimowa didn't find out until after the cases were made then things get more difficult again. Is it possible that this is the stick held up against the carrot (that we can't see) asking for the studio to add the license to the case?